DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 -2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 11141308 in view of Lowery et al (US 5374247). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 9 of Patent 11141308 recites all of the limitations set forth in claims 1 and 2 of the instant application except for a hormone instead of an IUD. Lowery et al (hereafter Lowery) discloses it was known in the art at the time of the invention for a system for delivering a device into the reproductive tract of a female to comprise a hormone (embryos contain hormones) in the second catheter to be delivered to the reproductive tract (C:2, L:18-22) in order to deal with problems of infertility. Therefore, it would have been within the level of one with ordinary skill in the art to further replace the IUD with a hormone in the second catheter in the claims of Patent 11141308, as taught by Lowery, in order to deal with problems of infertility.
Claims 1 -2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and of U.S. Patent No. 11583436 in view of Lowery et al (US 5374247). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2 and 10 of Patent 11583436 recites all of the limitations set forth in claims 1 and 2 of the instant application except for a hormone instead of an IUD deliverable in the second catheter. Lowery et al (hereafter Lowery) discloses it was known in the art at the time of the invention for a system for delivering a device into the reproductive tract of a female to comprise a hormone (embryos contain hormones) in the second catheter to be delivered to the reproductive tract (C:2, L:18-22) in order to deal with problems of infertility. Therefore, it would have been within the level of one with ordinary skill in the art to further replace the IUD with a hormone in the second catheter in the claims of Patent 11583436, as taught by Lowery, in order to deal with problems of infertility.
Claims 1 -2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 and of U.S. Patent No. 12414873 in view of Lowery et al (US 5374247). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 13 of Patent 12414873 recites all of the limitations set forth in claims 1 and 2 of the instant application except for the everting balloon comprising a check valve when the first catheter is in the extended configuration and a hormone instead of an IUD deliverable in the second catheter. Lowery et al (hereafter Lowery) discloses it was known in the art at the time of the invention for a system for delivering a device into the reproductive tract of a female to have the everting balloon comprise a check valve when the first catheter is in the extended configuration as well as a hormone (embryos contain hormones) in the second catheter to be delivered to the reproductive tract (C:2, L:18-22) in order to deal with problems of infertility. Therefore, it would have been within the level of one with ordinary skill in the art to further have the everting balloon comprise a check valve when the first catheter is in the extended configuration as well as replace the IUD with a hormone in the second catheter in the claim of Patent 12414873, as taught by Lowery, in order to deal with problems of infertility.
Claims 1 -2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 and of U.S. Patent No. 9101391 in view of Lowery et al (US 5374247). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of Patent 9101391 recites all of the limitations set forth in claims 1 and 2 of the instant application except for the everting balloon comprising a check valve when the first catheter is in the extended configuration and that the reproductive material is a hormone deliverable in the second catheter. Lowery discloses it was known in the art at the time of the invention for a system for delivering a device into the reproductive tract of a female to have the everting balloon comprise a check valve when the first catheter is in the extended configuration as well as a hormone (embryos contain hormones) in the second catheter to be delivered to the reproductive tract (C:2, L:18-22) in order to deal with problems of infertility. Therefore, it would have been within the level of one with ordinary skill in the art to further have the everting balloon comprise a check valve when the first catheter is in the extended configuration as well as replace the IUD with a hormone in the second catheter in the claim of Patent 9101391, as taught by Lowery, in order to deal with problems of infertility.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lowery et al (US 5374247).
Regarding claim 1, Lowery et al (hereafter Lowery) discloses a system for delivering a device (61) into the reproductive tract of a female comprising: a first catheter (15, 33) having a lumen (41) and a distal lumen port (43), wherein the first catheter (15, 33) has a retracted configuration (figure 3) and an extended configuration (figure 2); an everting balloon (17) attached to the first catheter, wherein at least a length of the everting balloon extends past a distal end of the first catheter when the first catheter is in the extended configuration (figure 2), wherein the length of the everting balloon that extends past the distal end of the first catheter comprises a check valve (49, at figure 2, distal opening of balloon can close due to pressure within everting balloon forcing the distal end 49 of the everting balloon to form the balloon check valve) when the first catheter is in the extended configuration (figure 2); a second catheter (61) slidably located in the first catheter; a third catheter ( 13, 19) radially outside of the first catheter (figure 5), wherein a first end of the everting balloon is attached to the third catheter (C:5,L:22-30), wherein a second end of the everting balloon is attached to the first catheter (at 45, figure 2); and a hormone (C:2, L:18-22; embryos contain and secrete hormones) in the second catheter (figure 5, C:7, L:3-10; L:38-65).
Regarding claim 2, Lowery discloses a system for delivering a device into the reproductive tract of a female comprising: a first catheter (15, 33) having a lumen (41) and a distal lumen port (43), wherein the first catheter has a retracted configuration (figure 3) and an extended configuration (figure 2); an everting balloon (17) attached to the first catheter, wherein at least a length of the everting balloon extends past a distal end of the first catheter when the first catheter is in the extended configuration (figure 2); a second catheter (61) slidably located in the first catheter (figure 5); a third catheter (13, 19)radially outside of the first catheter, wherein a first end of the everting balloon is attached to the third catheter (figures 2-3, C:5, L:22-30), wherein a second end of the everting balloon is attached to the first catheter (at 45, figure 2); and a hormone (C:2, L:18-22; embryos contain and secrete hormones) , wherein the second catheter is configured to deliver the hormone (figure 5, C:7, L:3-10; L:38-65).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANH TIEU DANG whose telephone number is (571)270-3221. The examiner can normally be reached Monday-Thursday (9am-4pm EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANH T DANG/Primary Examiner, Art Unit 3771